Appeal No. 1995-2772
Application 08/001,063
obvious to said person that the transformation of a host cell with said gene would result in
the production of a cell capable of making more biotin than a cell not transformed with said
gene, or would this task have been “obvious to try” by said hypothetical person. Our
appellate reviewing court distinguished these two situations in In re O’Farrell, 853 F.2d at
903, 7 USPQ2d at 1681 stating:
The admonition that "obvious to try" is not the standard under § 103 has
been directed mainly at two kinds of error. In some cases, what would have been
"obvious to try" would have been to vary all parameters or try each of numerous
possible choices until one possibly arrived at a successful result, where the prior art
gave either no indication of which parameters were critical or no direction as to
which of many possible choices is likely to be successful. E.g., In re Geiger, 815
F.2d at 688, 2 USPQ2d at 1278; Novo Industri A/S v. Travenol Laboratories, Inc.,
677 F.2d 1202, 1208, 215 USPQ 412, 417 (7th Cir. 1982); In re Yates, 663 F.2d
1054, 1057, 211 USPQ 1149, 1151 (CCPA 1981); In re Antonie, 559 F.2d at 621,
195 USPQ at 8-9. In others, what was "obvious to try" was to explore a new
technology or general approach that seemed to be a promising field of
experimentation, where the prior art gave only general guidance as to the particular
form of the claimed invention or how to achieve it. In re Dow Chemical Co., 837
F.2d, 469, 473, 5 USPQ2d 1529, 1532 (Fed. Cir. 1985); Hybritech, Inc. v.
Monoclonal Antibodies, Inc., 802 F.2d 1367, 1380, 231 USPQ 81, 90-91 (Fed. Cir.
1986), cert. denied, [ ] 107 S.Ct. 1606 [ ] (1987); In re Tomlinson; 363 F.2d 928,
931, 150 USPQ 623, 626 (CCPA 1966).
The initial burden of establishing a prima facie case of obviousness lies with the
examiner. In re Oetiker, 977 F.2d 1443, 1445, 24 USPQ2d 1443, 1444 (Fed. Cir. 1992);
In re Piasecki, 745 F.2d 1468, 1471-72, 223 USPQ 785, 787-88 (Fed. Cir. 1984). Here,
we find that the examiner has gone to great lengths to explain the teachings of the prior art,
and to explain why it would have been obvious to a person having ordinary skill in the art to
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